A guide to the UPC and the UP - Flipbook - Page 119
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According to art.5(4) Unitary Patent Regulation the Commission is to evaluate the applicable
limitations to the Unitary patent. As the limitations are considered a politically sensitive issue,
the Commission in its legislative capacity is called upon to review their functioning and possibly
make appropriate proposals for amendment. Some criteria for this evaluation are set out in
recital 11 Unitary Patent Regulation, according to which the following aspects are to be
considered: contribution of the patent system to innovation and technological progress,
the legitimate interests of third parties and overriding interests of society.
Article 6: Exhaustion
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Art.6 Unitary Patent Regulation relates to exhaustion of rights. It provides that the rights
conferred by a Unitary patent shall not extend to acts which are carried out within the
Contracting Member States in which that patent has unitary effect after that product has
been placed on the market in the Union by, or with the consent of, the patent proprietor,
unless there are legitimate grounds for the patent proprietor to oppose further
commercialisation of the product. This provision therefore contains substantive
law and is not a mere conflict of laws rule.
Article 7: Object of Property
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According to art.7 Unitary Patent Regulation, a Unitary patent will be treated like a national
patent, when it comes to it being “an object of property”. Generally speaking, the term
“object of property” concerns the patent as an object of legal relationships. Previous
drafts concerning unified intellectual property rights (such as the failed Community patent
regulation) 45 or existing regulations (such as the EU Trade Mark Regulation) 46 use this term
to refer to the law applicable to such things as transfers of legal title, rights in rem, levy of
execution and insolvency proceedings. The Unitary Patent Regulation itself does not contain
further explanation of this term, so that it is useful to refer to these earlier draft provisions.
Consequently, art.7 Unitary Patent Regulation regulates the applicable law at least for the
above-mentioned areas. 47
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Due to the reference to national law, art.7 Unitary Patent Regulation also has to be considered
as a conflict of laws rule. In this regard, it makes sense to assume that art.7 Unitary Patent
Regulation does not refer to the entire legal system of the applicable national law, including the
international private law, but rather refers to the substantive provisions of national law relating
to property rights. 48 If this reference in art.7 Unitary Patent Regulation were seen as a reference
to all the laws of a nation, the determination of the applicable legal system could become even
more complicated, especially since a further reference to yet another legal system based on a
private international law rule could not be ruled out. In addition, recital 9 Unitary Patent
Regulation indicates that rules of private international law in the applicable national law
should only apply in matters that are not covered by the Unitary Patent Regulation.
However, the question of the applicable national law concerning the Unitary patent as
an object of property is explicitly covered by art 7 of the Unitary Patent Regulation.
45
46
47
48
Proposal for a Council Regulation on the Community patent, COM(2000) 412 final, OJ No.C 337/E, 28.11.2000, p.278.
Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation
(EC) No.207/2009 on the Community trade mark, OJ No.L 341, 24.12.2015, p.21.
This is dealt with more fully in chapter 3 (Transactions with Unitary Patents and European Patents Subject to the Court).
Müller-Stoy and Paschold “Europäisches Patent mit einheitlicher Wirkung als Recht des Vermögens”, GRUR Int 2014, p.646 at
p.648; arg. e contrario arts 24(1)(e) and 24(2) UPCA; McGuire “European Patent Package: on the interplay of the Unitary Patent
Court Agreement and German Patent Act”, Mitt. 2015, p.537 at p.541.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 109
